Tag Archives: Brand Management and Branding

Trademark Fluff over Fluffernutters

Originally posted 2011-06-24 13:17:57. Republished by Blog Post Promoter


Reports a Lynn, Massachusetts newspaper:

A Lynn company known worldwide for its Marshmallow Fluff is suing Williams-Sonoma, Inc., claiming the culinary retailer is misusing the registered trademark, Fluffernutter.

I just made one of my sons a Fluffernutter tonight. You know — a Fluffernutter, which the good people at Durkee-Mower, Inc., the Marshmallow Fluff company, describe as “a wonderful concoction of Marshmallow Fluff and peanut butter in a delightfully tasty sandwich.” Legal experts agree on this definition. You might call that an odd coincidence, except that it’s almost all Avrumy eats. But I certainly didn’t know Fluffernutter (I mean FLUFFERNUTTER®) was a registered trademark.  It’s not surprising — instincitvely it seems as if it should be — and yet, and yet …

Why doesn’t the Fluffernutter page of the Marshmallow Fluff website show the circle-R emblem designating a registered trademark in FLUFFERNUTTER?  [Update:  Four years after I first posted this, it still doesn’t!]  What they do show is shown above — no circle-R. There is no notice of registraton or any other trademark rights in the mark FLUFFERNUTTER anywhere on the page, and if it is somewhere else on the site, I couldn’t find it. An odd way to protect a registered trademark.

More oddness: The word FLUFFERNUTTER is indeed registered; serial number 75175400. FLUFFERNUTTER was not registered until 1998, strange but not shocking to those of us who remember the Fluffernutter jingle (you can hear it by clicking on the Fluffernutter home page) from our own childhoods. But what’s more odd is that the registration doesn’t protect Fluffernutters! No, the goods and services listed in the registration are “printed recipes sold as a component of food packaging and cookbooks.”

Is that what I gave my little Avrumy for dinner? A printed recipe? I don’t think so! (There’s also a pending registration for … ice cream! I certainly didn’t give Avrumy ice cream for supper!)

Yes, theoretically speaking, at least, Durkee-Mower, Inc. has a problem, for as one of my other boys, Yisroel Asher, said as he saw me write this entry, “Can a name of a sandwich be a trademark?” Indeed, can it?

In fact, FLUFFERNUTTER appears to be a generic term describing a sandwich made with delicious Marshmallow Fluff — which is trademark protected, and whose makers evidently coined the word — and peanut butter. Indeed, Durkee-Mower does not sell Fluffernutters. You make them yourself with delilcious Marshmallow Fluff! So how can the company claim trademark infringement?

Think trademark dilution. The gift from Congress, wrapped by the courts (if temporarily lost in the parcel post by the Supreme Court) that keeps on giving. Or in this case, taking — taking a word right out of the English language and making someone liable under federal law for using it fairly, descriptively, accurately, non-confusingly, in favor of someone who files a federal trademark innacurately, confusingly and in a completely phony manner, to describe goods and services contrary to the manner in which the applicant itself uses the mark on its own website!

Will the court bite?

Other links on this story: Blogger Paul Harris reminisces about Fluffernutters [link is gone, not archived — RDC]; Bostonist gives some great background on the product.

UPDATE: This is almost certainly academic. It’s hard to see why Williams-Sonoma would fight this, notwithstanding that it’s winnable. How important can FLUFFERNUTTER be to a cooking equipment company? Don’t expect to hear about a decision — my guess is that the two sides will probably negotiate a walkaway.

UPDATED EVEN MORE:  Yep, PACER reports that case was settled in August of 2006.  “Terms not disclosed.”

Kissing trademark rights goodbye?

Originally posted 2008-05-25 19:50:54. Republished by Blog Post Promoter

Hershey muffin pan


Eric Johnson‘s Pixelization blog has a sweet insight into a sticky trademark mess that Hershey’s could be, theoretically, getting itself into:

It’s a Hershey’s-brand three-compartment silicone muffin pan. When you bake muffins in this pan, they come out – adorably, of course – in the shape of oversized Hershey’s chocolate bars – complete with the Hershey’s name and logo intaglioed in the shape of the finished muffin. The imprint of the Hershey’s name and logo is substantially the same as what one finds on a Hershey’s milk chocolate bar, after the foil is unwrapped.

Clearly, if you buy this muffin pan, there is an implied license to use it to make muffins with the Hershey’s logo. That is, there is an implied trademark license. But, as you might expect, Hershey’s exercises no control over the muffins you make with their logo in the pan you purchased.

Thus, this looks like a case of “naked licensing” – a fast way for a trademark owner to be involuntarily stripped of trademark rights.


“Intaglioed” — nice! But, get it? You’re making stuff that officially, permissively, persuasively says HERSHEY’S on it in official lettering and the usually IP-crazy nuts over Hershey’s have no idea what on God’s green earth you’re putting out there with their name on it! Eric elaborates:

The packaging for the muffin pan – identified as a “Hershey’s Licensed Product” – contains this legend: “THE HERSHEY’S TRADEMARKS AND TRADE DRESS ARE USED UNDER LICENSE.” This prophylactic spray of legalese is steeped in irony. How could Hershey’s put such care into making sure the muffin pan manufacturer had a license and would declare the same, yet witlessly end up issuing a license to all muffin-pan buyers to start churning out food items under the Hershey’s brand?

Ironic, indeed. My first inclination is to say, “Aw, come on!” But he’s right, isn’t he? There’s no limit on how much stuff you can put out with your official Hershey’s trademark-imprinter-on-food-thingy; indeed, how could they place a limit on the consumer’s use? And nowadays, corporations and “IP equity owners” don’t ever just have a little fun with trademarks, or let anyone else do so, either — precisely because doing so just might be construed as abandoning one’s rights!

As Eric points out, the irony, again, is that this device is meant to act as an affirmative brand-building device. Of course, in the scheme of things, it just may be shown to be a whimsical, fun kitchen toy that “no reasonable person” would think was a license to manufacture competing products with the HERSHEY’S mark.

Maybe. But Hershey’s would certainly have it coming to them if someone asserted this this as proof of abandonment [UPDATE:  or, as Rebecca Tushnet suggests, “self-dilution”] as a defense to some kind of infringement action. One can imagine such a defense at least raising a fact issue for purposes of avoiding a summary judgment or defeating an easy likelihood of success showing on an application for preliminary injunction. It would be interesting indeed to demonstrate too that Eric’s example is not the only one of Hershey doing more or less the same thing with its (great) food-borne trademarks. So, you never know.

The chocolate’s too darned sweet, too.

The color purple

Originally posted 2015-06-19 15:13:46. Republished by Blog Post Promoter

Cadbury-PurpleCadbury is purple in the face over not being able to secure the wordlwide exclusive rights to the use of the color purple in association with the sale of chocolate — even as against an Australian company that’s been using the two together for almost a century:

Cadbury tells me it is “vigorously appealing” against a judgment over the use of purple. In a case that it has pursued for five years, Cadbury has tried and failed to stop Darrell Lea, an Australian chocolate manufacturer, from using the colour.

Despite the fact that Darrell Lea was established in 1927 and has been using purple for most of its existence, Cadbury insists that it has no right to the colour. Cadbury has registered one shade of purple in relation to block chocolate in tablet form in Britain but it has not been as successful elsewhere.

Purple, actually, may be the oldest legally-protected “trademark” color, of sorts. The color was, at certain times during ancient times and antiquity, permitted to be worn only by the nobility. To which, in the chocolate sense, Cadbury may or may not have a claim. I do like the stuff, and perhaps it is among the elite in the chocolate hierarchy. Certainly compared to virtually anything else the English make it is uniquely edible — but regal?

UPDATE:  Cadbury’s claim melts in its hands, not just in our mouths.

UPDATE II:  Settled, dismissed, whatever. It’s all over but the calories!  Via @IPThinkTank.

UPDATE III: Yes.  But no.  I mean yes.

Slamming the DOORS

Originally posted 2010-08-10 17:08:46. Republished by Blog Post Promoter

History repeating and all, ya know.  First time, tragedySecond time — farce.

Best of 2007: Trademark rights in interdigitization

Originally posted 2015-01-20 17:05:27. Republished by Blog Post Promoter

Praying Hands

Thou, Rock

Nick Daly drops me a note to the effect that one Jay-Z, gazillionaire rhyming scatologist, has been sued by a professional perspirer and leaping stage goon called Diamond Dallas Page — ach! my kingdom for a stage name! — for the former’s “Roc-A-Fella Hand Gesture,” also known as the “Diamond Cutter” hand gesture. Evidently Mr. Z uses the former, Mr. Page the latter of these nicknames for the clever manipulation of the human carpal, metacarpal and phalange bones in a distinctive diamond-shaped pattern in association with the services provided by the respective performers.



Now, Roc-a-Fella is a record company specializing in rhythmic spoken-word obscenity-laced performance art which generates (1) some light, if you will, allowing one to peer into the dimmer recesses of the heart of urban America’s cultural darkness profundity, plus (2) much heat as regards the controversial word choice typically employed by its practitioners as well as the ribald subject matter of the works, in addition to (3) immense dump trucks full of cash.

You may perhaps, in a merry mood, “Rock a fellow” — “rock” him, in this sense meaning to entertain him or absorb his attentions by use of contemporary upbeat rock and roll music or its derivaties — or as we northeastern urbanites might say, you might rock “a fella”; hence the name of the company. And it is hard not to suspect an allusion, based both on ironic association considering the countercultural nature of the works as well as with vast hordes of currency, to the name Rockefeller, the billionaire dynasty that, as is well known, controls everything, and whose name is arguably a “trademark” for immense wealth and power.  (UPDATE:  Jay-Z, in contrast, evidently cannot quite as readily as the Old Man could rock every fella as he might like to.) Read More…

Virtually Aimee

Originally posted 2012-07-24 21:10:25. Republished by Blog Post Promoter

Virtually Blind, a blog by Benjamin Duranske focusing on legal issues in virtual reality, reports (via IBLS):

Second Life’s ‘Aimee Weber’ (Alyssa LaRoche) recently became the first avatar with a registered trademark. The application for the registered mark was filed February 18, 2007 approved for publication July 7, and published for opposition August 14. According to ‘Weber,’ no opposition was filed, and she plans to immediately begin using the mark. In a sea of often silly metaverse firsts, this one could well signal a trend. ‘Weber’ runs a respected design studio in-world, has one of the most recognizable avatars in Second Life, and literally wrote the book on Second Life content creation. And now she gets to wear “TM” bling too.

A trademarked [sic] avatar, though novel, shouldn’t really be a surprise. McDonald’s trademarked Ronald, so there is no reason an avatar — for many users, a computer generated representation of their brand — could not also be trademarked. The rather distinct appearance of avatar ‘Aimee Weber’ is indisputably identified with the brand. And ‘Aimee Weber’ is as much a Second Life icon as she is a person you chat with at a virtual coffee shop or hire for design work; the little “TM” just makes that official.

Well, isn’t it the ® that makes it official?  Why, “TM”‘s aren’t official at all!  Anyway, I do appreciate the Ronald McDonald analogy.  But I just want readers to be clear that while Aimee Weber is essentially an alter ego for real person Alyssa LaRoche, by Ronald there isn’t really a traveling hamburger clown.  Take it from me.  They wouldn’t lie about why Ronald never returned my fan mail.

Ron Coleman

It does make you wonder if everyone’s “avatar” should be registered as a trademark, too, even if they’re not so virtual-worldy.  Brand equity’s not for nothing, you know!  So?

I wouldn’t lose any sleep over that.  Some of us are inimitable, and so are our animated versions.  Besides, as Alyssa LaRoche told Duranske, “It’s a general move to protect my brand. We haven’t seen any problems yet, but prior to the trademark [registration], we wouldn’t have been as well protected if somebody wanted to plaster my image all over an unrelated product.”  Right.  So, when we start seeing bad people passing off unrelated goods and services as those of LOC, we’ll have to consider our options.

Grey and not so good

Originally posted 2009-10-14 13:17:22. Republished by Blog Post Promoter

Yesterday’s Wall Street Journal had an extensive article on about companies that “borrow” trademark equity, or purported equity, from others to build their brands, pushing the edges of fair use and perhaps then some.  Marty Schwimmer has some multimedia backup (ok, well, talking heads) on this case, too.

Best of 2006: Trademark City

Originally posted 2015-01-19 19:30:38. Republished by Blog Post Promoter

Trademark City

The Strategic Name Development blog reports that the naming rights to the New York Mets’ new baseball stadium have been sold to Citigroup. The stadium will be called “CitiField” and the privilege of that garish plug will cost Citigroup $20 million a year, or the cost of a grade-A free agent. The blog post has a great rundown on alternative “Citi” names that were considered, as well as a roundup of back-page and other learned reactions.



CitiGroup is itself a metropolis of trademark issues. The CitiGroup Center, which is right out the window of my office (over my shoulder in the picture above left), is a landmark building, i.e., a de facto trademark for the company on the New York skyline, of which it is one of the leading and tallest lights. In the picture below, taken from the east, you can see how its distinctive angles tower jauntily over the lovable rust-colored “lipstick”-shaped [former] LIKELIHOOD OF CONFUSION Building at 885 Third Avenue (below). But of course, buildings can’t really be trademarks, can they? If they can be, the CitiGroup Center is. Read More…

Best of 2010: If you see something… it’s probably “trademarked”

Originally posted 2010-12-24 08:00:42. Republished by Blog Post Promoter

First published on May 12, 2010.

If You See Something, Say Something

See me, squeal me

A while ago, while obsessing about New York’s Metropolitan Transportation Authority and its obsession with turning what might have once merely been viewed as functional municipal signage or insignia into “IP ,” I made fun of the MTA’s trademark application (since approved) for IF YOU SEE SOMETHING, SAY SOMETHING.

So in light of last week’s Times Square bomb-thingy, who’s laughing now?  Not the New York Times, in an article about the phrase’s elevation to “iconic,” including an interview with sloganeer extraordinaire Allen Kay:

“The model that I had in my head was ‘Loose Lips Sink Ships,’ ” Mr. Kay said. “I wasn’t born [yet] during World War II, but I sure knew the phrase and so did everybody else.”

“In this case,” he added, “I thought it was ironic because we want just the opposite. We want people to talk. I wanted to come up with something that would carry like that. That would be infectious.”

In 2002, the transportation agency saw a need for a security-awareness campaign to encourage customers to report suspicious activity or unattended packages, and they turned to Mr. Kay, who still had the phrase on his index card. By January 2003, the slogan was on posters and placards in subway cars, buses and trains.

It has since become a global phenomenon — the homeland security equivalent of the “Just Do It” Nike advertisement — and has appeared in public transportation systems in Oregon, Texas, Florida, Australia and Canada, among others. Locally, the phrase captured, with six simple words and one comma, the security consciousness and dread of the times, the “I ♥ NY” of post-9/11 New York City.

The transportation authority received a trademark on the slogan from the United States Patent and Trademark Office, though unauthorized uses appear to outnumber authorized ones.

That’ll happen with plain old ways to say things in English–once called “phrases” or “sentences,” not “trademarks.”

Did you know, by the way, that you can “receive a trademark” from the PTO?  I didn’t.  I thought they only registered trademarks, which are otherwise earned by use that rises to the level of establishing a secondary meaning!  Silly me.

So the end of that distinction, manifested of course by the common use of “trademark” as a verb, is now official, for it is no longer recognized among reporters or their diligent, triple-checking editorial phalanxes at the Newspaper of Record.  This says it all about what “trademarking” has become, unfortunately; as to “journalism,” well, what do I know?

There’s more: Read More…

Oscarwatch.com a trademark infringement?

Originally posted 2010-03-23 15:38:08. Republished by Blog Post Promoter

The Academy of Motion Pictures is suing a website called Oscarwatch.com. Fair use anybody? The site’s owner, Sasha Stone, has been doing his homework:

I used to watch Oscar all the time

“I am not trying to exploit the Academy’s trademark to offer competing goods and services,” Oscarwatch.com’s Stone told [The Hollywood Reporter].
“Rather, I am offering commentary that directly addresses the Oscars awards, a topic of great interest to the general public, thanks largely to the efforts of the Academy itself. I believe that the use of (Oscarwatch) to describe commentary about the Oscars is that of fair use.”

I believe he’s right. But this may be one of those close cases in which the mark holder still has to act. And in California, the Academy’s chances aren’t terrible, because many of their judges are.

UPDATE:  More of the same, and a case that Oscar Madison would certainly appreciate!

UPDATE: From the Citizen Media Law Project:

The parties settled soon after the lawsuit was filed, and Stone changed the name of his site to “Awards Daily” and his domain name to “http://www.awardsdaily.com.”